TRADEMARK LAW OFFICE 115
Examining Attorney Janice L. McMorrow
Serial No. 77/081,843
Mark: NEXT GENERATION INDEXES

Applicant Financial Development HoldCo LLC (“Applicant”) hereby submits its

response to the U.S. Patent and Trademark Office’s Office Action mailed on October 24, 2007,

with regard to the trademark application for NEXT GENERATION INDEXES (Serial No.

77/081,843).

REMARKS

The Examining Attorney has refused registration of Applicant’s NEXT

GENERATION INDEXES mark on the grounds that it resembles the mark in U.S.

Registration No. 3,254,442 (NEXT GENERATION) to the extent that makes confusion likely.

Trademark Act, Section 2(d), 15 U.S.C. § 1052(d), TMEP §§ 1207.01 et seq. Applicant

respectfully disagrees with this conclusion and requests that the Examining Attorney reconsider

her decision for the reasons that follow.

Applicant’s NEXT GENERATION INDEXES mark is not likely to be confused with

the registered mark. While the determination as to whether marks are likely to be confused is a

difficult one that involves the consideration of many factors, the Examining Attorney appears

to have denied Applicant’s application on the grounds that Applicant’s and the registered mark

are somewhat similar in appearance (in that they incorporate common terms), and on the

grounds that their respective services appear to be related. This Response addresses the factors

that make it clear that there is no likelihood of confusion between Applicant’s marks and the

registered mark.

I. APPLICANT’S USE OF ITS NEXT GENERATION INDEXES MARK IS
UNLIKELY TO CAUSE CONFUSION

In the Office Action, registration was refused because it was said that Applicant’s

NEXT GENERATION INDEXES mark, when used in connection with “financial services,

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Mark: NEXT GENERATION INDEXES

namely developing and providing financial indexes for tracking the performance of stock, stock

funds, futures, options, annuities, and other securities,” so resembles the registered mark as to

be likely to cause confusion.

However, as the following discussion establishes, the registered mark should not pose a

barrier to the registration of Applicant’s NEXT GENERATION INDEXES mark. “[I]n every

case turning on likelihood of confusion, it is the duty of the examiner . . . to find, upon

consideration of all the evidence, whether or not confusion appears likely.” In re E. I. du Pont

de Nemours & Co., 476 F.2d 1357, 1361, 177 U.S.P.Q. 563, 568 (C.C.P.A. 1973) (emphasis in

the original). Although there are similarities between the marks at issue, a full consideration of

the evidence, including (i) the apparent distinctions between the marks, (ii) the diluted nature of

the subject field given the coexistence of competing marks, (iii) the care exercised by

consumers of the services covered by the marks at issue, (iv) Applicant’s good faith, and (v) the

resolution of any doubt in Applicant’s favor, compels the conclusion that Applicant’s mark is

unlikely to cause any confusion. Accordingly, Applicant submits that Applicant’s NEXT

GENERATION INDEXES mark is entitled to registration on the Principal Register.

A. The Marks Are Not Identical and Have Readily Distinct Appearances and

Sounds.

As an initial matter, the NEXT GENERATION registered mark cited by the Examining

Attorney is not identical in terms of appearance or sound to Applicant’s NEXT GENERATION

INDEXES mark. Conversely, Applicant’s mark is substantially different in appearance from the

registered mark. Although the marks of Applicant and the registrant share the terms “NEXT

GENERATION,” Applicant respectively submits that it is erroneous to deem marks confusingly

similar merely because they share common elements. The anti-dissection rule, to which the
Trademark Board and most courts uniformly adhere, requires a finder of fact to view conflicting

marks in their entireties when determining whether such marks are confusingly similar to each

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Examining Attorney Janice L. McMorrow
Serial No. 77/081,843
Mark: NEXT GENERATION INDEXES

other. See, e.g., Recot, Inc. v. Becton, 214 F.3d 1322, 1329-30, 54 U.S.P.Q.2d 1894 (Fed. Cir.

2000) (reversing Board for improper dissection of conflicting marks to determine likelihood of

confusion); see also Massey Junior College, Inc. v. Fashion Inst. Of Tech., 492 F.2d 1399, 1402,

181 U.S.P.Q. 272, 273-74 (CCPA 1974). The fundamental issue is whether the marks create the

same overall impression when viewed as a whole. Sun-Fun Prods., Inc. v. Suntan Research &

Dev., Inc., 656 F.2d 186, 189, 213 U.S.P.Q. 91, 94 (5th Cir. 1981) (test is “overall impression,”

not a “dissection of individual features”). As set forth below, Applicant submits that its and the

registered mark do not create the same overall impression, and thus there is no likelihood of

confusion.

In particular, Applicant’s NEXT GENERATION INDEXES mark has a distinct visual

appearance than that of the cited NEXT GENERATION mark. Visually, the words in each

mark are dissimilar because while Applicant’s mark and the registered mark both contain the

phrase “NEXT GENERATION,” Applicant’s mark commands attention to its distinct term

“INDEXES.” This component in Applicant’s mark is equal in strength to the “NEXT

GENERATION” component. Therefore, the eye naturally views Applicant’s entire mark as an

integral whole, rather than being drawn specifically to the “NEXT GENERATION” component.

Indeed, when encountering Applicant’s and the registered mark, consumers and others will focus

on the entire marks, including the unique term found in Applicant’s mark, with that term thereby

distinguishing Applicant’s mark from the cited marks in their entirety.

The Trademark Office and the courts have found that the existence of distinct

components in otherwise similar marks may sufficiently distinguish the marks. See, e.g., Mr.

Hero Sandwich Systems, Inc. v. Roman Meal Co., 781 F.2d 884, 887-88, 228 U.S.P.Q. 364, 367

(Fed. Cir. 1986) (ROMAN and ROMANBURGER both for food products not confusingly
similar); Bell Laboratories, Inc. v. Colonial Products, Inc., 644 F. Supp. 542, 545-46, 231

U.S.P.Q. 569, 572 (S.D. Fla. 1986) (FINAL and FINAL FLIP both for rodenticide/pesticide

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not confusingly similar); Lever Bros. Co. v. Barcolene Co., 463 F.2d 1107, 1109, 174 U.S.P.Q.

392, 393 (C.C.P.A. 1972) (ALL and ALL CLEAR both for household cleaners not

confusingly similar); Sears Mortg. Corp. v. Northeast Sav. F.A., 24 U.S.P.Q.2d 1227, 1229

(T.T.A.B. 1992) (the Trademark Trial and Appeal Board noting that, even if the marks before

them were used with identical services, the marks APPROVAL PLUS and

APPROVALFIRST do not closely resemble each other in appearance or pronunciation, or

meaning, and that there is no likelihood of confusion); Washington Nat’l Ins. Co. v. Blue Cross

& Blue Shield United, 727 F. Supp. 472, 474, 14 U.S.P.Q.2d 1307, 1309 (N.D. Ill. 1990) (no

confusing similarity between the marks ADVANTEDGE and THE ADVANTAGE

PROGRAM, both for use with managed health care programs); Gruner + Jahr USA

Publishing v. Meredith Corp., 991 F.2d 1072, 1078, 26 U.S.P.Q.2d 1583, 1588 (2d Cir. 1993)

(affirming the district court’s judgment denying injunctive relief against the mark PARENT’S

DIGEST, used in connection with a parenting magazine, in the face of plaintiff’s PARENTS

mark, also used for a magazine); Conde Nast Publications, Inc. v. Miss Quality, Inc., 507 F.2d

1404, 1407, 184 U.S.P.Q. 422, 425 (C.C.P.A. 1975) (finding that the mark COUNTRY

VOGUES does not so resemble the mark VOGUE as to be likely to cause confusion; noting

that COUNTRY VOGUES and VOGUE do not look or sound alike, that the only similarity is

that each mark contains the word “vogue”, and that the dissimilarities between the marks,

viewed in their entireties, outweigh that similarity so as to leave no doubt).

Applicant’s NEXT GENERATION INDEXES mark also has a different and distinct

sound than that of the registered NEXT GENERATION mark. Courts have applied an

“auditory characteristics test” to determine whether one mark generates an auditory response that

calls to mind or may be confused with the sound of another mark. Chips ‘N Twigs Inc. v. Chip-

Chip Ltd., 414 F. Supp. 1003, 1015, 190 U.S.P.Q. 361 (E.D.Pa.1976). In applying this test,
courts have focused on the number of syllables in both the common and distinctive portions of

the marks, and have found that a distinguishing multi-syllable portion is sufficient to set the

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Examining Attorney Janice L. McMorrow
Serial No. 77/081,843
Mark: NEXT GENERATION INDEXES

marks apart. See Schmid Labs. v. Youngs Drug Prods. Corp., 482 F. Supp. 14, 18, 206 U.S.P.Q.

468 (D.N.J. 1979) (distinguishing sound of the two-syllable prefix of SENSI-RIBBED

sufficiently distinguishes the mark from the one-syllable word RIBBED). Here, the phrase

“NEXT GENERATION” in the cited mark contains five syllables. In contrast, the phrase

“NEXT GENERATION INDEXES” in Applicant’s mark contains an additional strong and

distinct multi-syllable component. Just as in Schmid Labs., the addition of the multi-syllable

term “INDEXES” gives the overall mark a distinct sound, thus sufficiently distinguishing the

five-syllable phrase in the registered mark with the eight-syllable phrase in Applicant’s mark.

In the end, “consideration must be given to … ‘the effect of the entire mark including any

term in addition to that which closely resembles the opposing mark.’” In re Cosvetic

Laboratories, Inc., 202 U.S.P.Q. 842, 845 (T.T.A.B. 1979) (quoting Rockwood Chocolate Co. v.

Hoffman Candy Co., 372 F.2d 552, 556, 152 U.S.P.Q. 599 (C.C.P.A. 1967)). The effect and

overall impression of the marks here lead to an absence of any likelihood of confusion between

Applicant’s NEXT GENERATION INDEXES mark and the registered mark.

B. The Existence of Numerous Coexisting Marks Indicates the Somewhat

Diluted Nature of the Field, Warranting Registration Here.

Where multiple parties are using similar marks or marks with similar components,

the entry of another mark into the already “crowded field” is less likely to cause confusion than

would be the situation otherwise. See, e.g., In re E. I. Du Pont de Nemours & Co., 476 F.2d at

1361, 177 U.S.P.Q. at 567 (the number and nature of similar marks in use on similar goods is a

factor to be considered in evaluating likelihood of confusion); Procter & Gamble Co. v.

Johnson & Johnson, Inc., 485 F. Supp 1185, 1196-97, 205 U.S.P.Q. 697, 707 (S.D.N.Y. 1979),

aff’d, 636 F.2d 1203 (2d Cir. 1980) (use of the mark SURE for deodorant is intrinsically weak
and entitled to only limited protection). Marks in such a field are entitled to relatively narrow

protection. 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §§

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Mark: NEXT GENERATION INDEXES

11:85 and 11:86 (4th ed. 2003). See also Colgate-Palmolive Co. v. Carter-Wallace, Inc., 432

F.2d 1400, 1402, 167 U.S.P.Q. 529, 530 (C.C.P.A. 1970) (likelihood of confusion reduced

when the overlapping term is weak, including where it is in common use by other sellers);

Knapp-Monarch Co. v. Poloron Products, Inc., 134 U.S.P.Q. 412, 414 (T.T.A.B. 1962) (no

likelihood of confusion between THERMEX and THERM-A-JUG, including given the

suggestiveness of the overlapping, common term “Therm”); Washington Nat’l Ins. Co. v. Blue

Cross & Blue Shield United, 727 F. Supp. 472, 474, 14 U.S.P.Q.2d 1307, 1311 (N.D. Ill. 1990)

(the term “Advantage” held to be weak because of other third-party use in the field); In re

Hamilton Bank, 222 U.S.P.Q. 174, 178 (T.T.A.B. 1984) (finding that a commonly used term

does not provide a basis for a likelihood of confusion finding).

Here, the Trademark Office already has issued registrations for numerous marks

covering financial services that contain the phrase “NEXT GENERATION,” based on the

distinction of additional terms. Examples of such marks include, but are not limited to, the

following: THE NEXT GENERATION OF ETFS (U.S. Registration No. 3261193), NEXT

GENERATION RETIREMENT PROGRAM (U.S. Registration No. 3019732), THE NEXT

RE GENERATION (U.S. Registration No. 2794570), NEXT GENERATION PARTNERS

(U.S. Registration No. 2715773), NEXT-GENERATION IRA (U.S. Registration No.

2872044), and NEXTGEN COLLEGE INVESTING PLAN (U.S. Registration No.

2476425). Coverage by these marks includes such financial services as investment advisory

services, financial analysis and consultation services, and investment management services, all

of which are related to the services provided under registrant’s mark. See the registration print-

outs attached hereto as Exhibit A.

Given this coexistence, the trademark field already is somewhat diluted and “customers

will not likely be confused between any two of the crowd and may have learned to carefully
pick out one from the other.” 2 McCarthy, § 11:85 at 11-163. See also Miss World (UK) Ltd.

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v. Mrs. America Pageants, Inc., 856 F.2d 1445, 1449-50, 8 U.S.P.Q.2d 1237, 1241 (9th Cir.

1988) (quoting McCarthy, supra, with approval).

In addition, most of these marks were registered prior to the registration of the cited

mark, yet the Trademark Office allowed the cited mark in spite of the existence of the other

marks. The fact that the Trademark Office has registered these marks over each other further

diminishes their effectiveness as a potential bar to the registration of Applicant’s mark, and

establishes the Trademark Office’s own recognition that any distinction between the marks,

such as the additional terms added to the phrase “NEXT GENERATION,” suffices to

distinguish the marks and establish their right–including that of Applicant’s mark–to

registration. See also In re Tia Maria, Inc., 188 U.S.P.Q. 524, 526 (T.T.A.B. 1975); Smithkline

Beckman Corp. v. Proctor & Gamble Co., 591 F. Supp. 1229, 1237, 223 U.S.P.Q. 1230, 1235

(N.D.N.Y. 1984), aff’d without op., 755 F.2d 914 (2d Cir. 1985) (no confusion where

consumers who are faced with similar marks (ECOTRIN, EXCEDRIN and EMPIRIN) are

able to distinguish between them and further will be able to distinguish defendant’s mark

ENCAPRIN, which is no more confusing than the existing marks).

Thus, the fact that Applicant’s and the registrant’s marks share this “NEXT

GENERATION” component should not bar registration of Applicant’s mark.

C. The Care Exercised by Purchasers Makes Confusion Unlikely.

Purchaser care and sophistication similarly inform whether confusion between marks is

likely. A consumer who exercises scrutiny in selecting a product is likely to pay close attention

to the distinguishing features and trademarks of the product, and is not likely to confuse them

with the products of another manufacturer. See, e.g., In re E. I. du Pont de Nemours & Co.,
476 F.2d at 1361, 177 U.S.P.Q. at 567 (whether buyers are likely to buy a product on “impulse”

or after careful deliberation is an important factor in evaluating likelihood of confusion);

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Information Clearing House, Inc. v. Find Magazine, 492 F. Supp. 147, 162-63, 209 U.S.P.Q.

936, 949-50 (S.D.N.Y. 1980).

Here, Applicant’s financial services are designed to meet the needs of a full range of

investors, including sophisticated investors such as institutional investors and investors of high

net worth. See the description of Applicant’s services, attached hereto as Exhibit B. An

institutional investor is “an investor, such as a bank, insurance company, retirement fund,

hedge fund, or mutual fund, that is financially sophisticated and makes large investments,

often held in very large portfolios of investments.” (emphasis added). See the Internet

definition available at http://en.wikipedia.org/wiki/Institutional_investor, a copy of which is

attached hereto as Exhibit C. A high-net-worth individual is a person with a high net worth,

who is typically defined as having investable assets in excess of $1,000,000. See the Internet

definition available at http://en.wikipedia.org/wiki/High_net_worth_individual, a copy of

which is attached hereto as Exhibit D. The size of investments with which these consumers

seek financial services is significant, and supports Applicant’s assertion that consumers using

its services are sophisticated, and will not be likely to use Applicant’s services on impulse.

Instead, the consumers are sophisticated and certainly will know with whom they are dealing.

Given the specialized nature of financial services and their consumers, there is little

likelihood of confusion between the marks at issue. Cf. Fawick Flexi-Grip Co. v. Hungerford

Plastics Corp., 111 U.S.P.Q. 140, 141 (Comm’r Pat. & Trademarks 1956) (confusion unlikely

where customers know what they want, where to buy it, and with whom they are dealing);

Homeowners Group, Inc. v. Home Marketing Specialists, Inc., 931 F.2d 1100, 1111,

18 U.S.P.Q.2d 1587, 1595-96 (6th Cir. 1991) (lesser likelihood of confusion with expensive

purchases or sophisticated buyers).

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D. Applicant Has No Intent to Trade on Any Good Will Associated with the

Registrant’s, or Any Other Party’s, Mark.

The absence of any evidence of an applicant’s intent to trade on the good will of a

registrant’s mark further counsels against a finding that confusion is likely. Cf. 3 McCarthy,

§ 23:110 at 23-210. Applicant selected its NEXT GENERATION INDEXES mark in the

utmost of good faith, without any intent to cause confusion. That good faith and lack of intent

to confuse the public is an additional factor to consider here and further militates in favor of the

lack of any likelihood of confusion and in favor of registration. See Family Circle, Inc. v.

Family Circle Associates, Inc., 332 F.2d 534, 540, 141 U.S.P.Q. 848 (3rd Cir. 1964).

E. Any Doubt Should Inure to the Benefit of Applicant.

Finally, any doubt as to whether confusion is likely should be resolved in Applicant’s

favor. See, e.g., In re Bliss & Laughlin Industries, Inc., 198 U.S.P.Q. 127, 128 (T.T.A.B.

1978); In re American Hospital Supply Corp., 219 U.S.P.Q. 949, 951 (T.T.A.B. 1983); In re

Geo. A. Hormel & Co., 218 U.S.P.Q. 286, 287 (T.T.A.B. 1983); In re Shutts, 217 U.S.P.Q. 363,

365 (T.T.A.B. 1983). Any person who believes that he or she would be damaged by the

registration of Applicant’s mark will have an opportunity to oppose the registration through an

opposition or cancellation proceeding in the future.

II. CONCLUSION

In light of the above discussion, there is no likelihood that any confusion will result

from the registration of Applicant’s NEXT GENERATION INDEXES mark. Moreover, the

objections and issues raised in the Examining Attorney’s Office Action otherwise have been

addressed. Thus, Applicant respectfully asks for the prompt passage of its trademark
application to publication.

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Examining Attorney Janice L. McMorrow
Serial No. 77/081,843
Mark: NEXT GENERATION INDEXES

However, should there be any question or other matter which can be handled by an

Examining Attorney’s Interview or Amendment, Applicant respectfully requests that the

Examining Attorney contact the undersigned directly.

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